DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2 March 2026 has been entered.
Response to Amendment
In view of the amendments to claim 8, the prior art rejections have been modified. These changes were necessitated by these amendments.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over WIPO Publication Number 2020/085487 (WO ‘487).
In regards to independent claim 8 and dependent claims 9-10, WO ‘487 is directed to an aluminum alloy brazing sheet for brazing an aluminum material in an inert atmosphere or in a vacuum without using a flux. (Lines 13-14)
The aluminum alloy brazing sheet is a two-layer material in which a brazing material/core material is laminated in this order. (Lines 60-62) The core material is 0.5 to 2.0% manganese, 0.4 to 2.0% magnesium, 1.5% or less silicon, 1.0% or less iron, up to 0.3% titanium, and the balance of aluminum. (Lines 63-66) The brazing material is 4.0 to 13.0% silicon and the balance of aluminum. (Lines 63-66) These compositional ranges overlap the claimed ranges or are so close that prima facie one skilled in the art would have expected them to have the same properties. (See MPEP 2144.05,I) Therefore, a prima facie case of obviousness exists.
The material can be etched with a weak acid. (Lines 736-739)
The invention further provides at least hot working, cold working, and cold working in a laminate, in this order. (Lines 175-176) A method for producing the product includes obtaining an aluminum alloy brazing sheet by performing one or more intermediate annealing between rolling passes and a final annealing after a final cold working pass. (Lines 175-179) The intermediate annealing time kept at 300 C or higher is 3 hours or longer, the time kept at 340 C or higher is 1 hour or longer, and the cooling rate is 300 C/hour or less. (Lines 206-209)
In cold working, intermediate annealing is performed once or twice or more between cold rolling passes. (Lines 670) The temperature of the intermediate annealing is 200 to 500 C, preferably 250 to 400 C. (Lines 670-671) In the intermediate annealing, the temperature can be raised to the intermediate annealing temperature and after reaching the intermediate annealing temperature, cooling may be started immediately, or after reaching the intermediate annealing temperature, after being held at the intermediate annealing temperature for a certain time, cooling may be started. (Lines 671-675) The holding time at the intermediate annealing temperature is 0 to 10 hours, preferably 1 to 5 hours. (Lines 675-676) This reference sets forth an annealing at 400 C for a time of 3 hours. (720-721) These conditions appear to meet the diffusion area D expressed by Formula (I) as set forth in the instant claims.
Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the Office can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on “inherency” under 35 USC 102, on “prima facie obviousness” under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the Office’s inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton and Shaw, 195 USPQ 430 (CCPA 1977).
Since the prior art sets forth conditions that meet the method of Claim 10, which is directed to a method of producing the claimed product of claim 8, it would be expected that the resulting product of the prior art would meet the claimed property limitations. Consequently, absent a showing to the contrary, it appears that the product in the prior art necessarily or inherently possesses the characteristics of the claimed product.
As to claim 11, the clad ratio of the brazing material is usually about 5 to 30%. (Lines 506-510) The thickness of the plate can be 0.5 mm. (Line 720) The thickness of the brazing-material would overlap the claimed range.
Response to Arguments
Applicant's arguments filed 4 February 2026 have been fully considered but they are not persuasive.
Applicant argued that the amended claim 8 eliminates the overlap as set forth in the prior art rejections of the previous Office Action.
This argument is not found to be persuasive in view of the modifications to the reasons of the rejections as set forth above in the prior art rejections.
A prima facie case of obviousness exists when the claimed ranges overlap or lie inside ranges disclosed by the prior art. MPEP 2144.05,I. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Id. In such a case, the proportions are so close that prima facie one skilled in the art would have expected them to have the same properties. Id.
In the instant case, Applicant amended the claims from “Mg at 0.10 to 0.40 mass %” to “Mg at 0.10 to less than 0.40 mass %” in the fifth and sixth lines of the claim. The prior art sets forth a range for the magnesium in the core being 0.4 to 2.0%. (Lines 63-66) The difference between the prior art range and the claimed range is infinitesimally small. These proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.
Applicant asserts that WO ‘487 teaches away from the claimed amounts of magnesium in the core. Applicant points to the explicit examples set forth in this references, both inventive and comparative. Applicant also points to the preferential ranges of magnesium. Applicant asserts this constitutes a teaching away.
This argument is not found to be persuasive.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. MPEP 2123,I. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. MPEP 2123,II. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. Id. The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. Id.
In the instant case, the prior art set forth the broad disclosure of magnesium present in an amount of 0.4 to 2.0%. (Lines 63-66) The presence of the preferred ranges or explicit embodiments do not criticize, discredit, or otherwise discourage this broader disclosure. Therefore, the teaching of the reference do not constitute a teaching away from the broader ranges that was disclosed by the prior art.
Applicant argues that with respect to the Mg content in the brazing material, WO ‘487 neither discloses nor suggests the technical concept of limiting it to less than 0.05 mass %. Applicant asserts that WO ‘487 indicates an upper limit for Mg as an optional additive element being 2.0% and the brazing material of certain inventive examples include 1.80%. Applicant concludes that WO ‘487 is clearly different from the present invention.
This argument is not found to be persuasive.
As Applicant recognized in the arguments, the magnesium is “an optional additive element” within the teachings of WO ‘487. The prior art teaches that “[t]he brazing material may further contain Mg.” (Line 356) The prior art then teaches “When the brazing material contains Mg…” (Lines 357-358) Mg is an optional element. When the option to not include magnesium is taken the amount of Mg would be a zero value. This falls within the claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/ Primary Examiner, Art Unit 1784